The domain name at issue is: <scorpions.com>, and the Registrar is CORE Internet Council of Registrars

Procedural History

The WIPO Arbitration and Mediation Center [the Center] received the Complaint on June 24, 2001, [electronic version] and on June 14, 2001, [hard copy]. The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy [the Policy], the Rules for Uniform Domain Name Dispute Resolution Policy [the Rules], and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy [the Supplemental Rules]. The Complainant made the required payment to the Center.

On June 18, 2001, the Center received a Supplement to the Complaint with additional Annexes 10 and 11.

The formal date of the commencement of this administrative proceeding is July 11, 2001.

On July 2, 2001, the Center transmitted via email to CORE a request for registrar verification in connection with this case and on July 5, 2001, CORE transmitted by email to the Center CORE’s verification response confirming that the registrant is Albert Hot Rods and that the contact for both administrative and billing purposes is Network Operations Center at the same address as the registrant.

Having verified that the Complaint satisfied the formal requirements of the Policy and the Rules, the Center transmitted on July 11, 2001, to <postmaster@scorpions.com> and to the other addresses provided this Notification of Complaint [including the Supplement] and Commencement of the Administrative Proceeding. The Center advised that the Response was due by July 30, 2001. On the same day the Center transmitted by fax and by mail copies of the foregoing documents to <postmaster@scorpions.com> and the addresses provided.

A request from the Respondent for a 5 day extension to submit the Response was granted. On August 3, 2001, a Response was received and on August 6, 2001, Acknowledgement of Receipt of Response was sent to the Complainant and to the Respondent using the same contact details and methods as were used for the Notification of Complaint and Commencement of the Administrative Proceedings.

On September 4, 2001, the Center received from the Complainant a Reply to the Response and on September 26, 2001, this was transmitted by the Center by email to the Respondent and to the Panel. The Rules make no provision for a Reply to Response and Panelists have taken the position in other administrative proceedings under the Policy that such additional communications by the Parties should be permitted only in certain limited circumstances consistent with the obligations of the Panel to conduct the proceeding with expedition and ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.

In this case, the Panel take the view that the Complainant’s Reply should be admitted to the extent that it addresses matters raised by the Response that could not reasonably have been anticipated in the Complaint. From the Discussions and Findings section of this Decision the extent to which the Panel refers to the Complainant’s Reply will be apparent.

In the circumstances, should the Respondent be entitled to submit a Rejoinder? Here, the Panel have not proposed this to the Respondent for the reason that there is nothing in the Complainant’s Response which has caused the Panel to take a different view in reaching its Decision.

Having received Declarations of Impartiality and Independence and Statements of Acceptance, the Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Dana Haviland, Mark Partridge and David Perkins were formally appointed Panelists. The Projected Decision Date was October 8, 2001, which was subsequently extended to October 15, 2001, and then October 31, 2001. The Panelists find that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the Supplemental Rules.

Having reviewed the communication records in the case file, the Administrative Panel finds that the Center has discharged its responsibility under para. 2(a) of the Rules “to employ reasonably available means calculated to achieve actual notice to Respondents”. Therefore, the Administrative Panel shall issue its Decision based upon the Complaint, the Supplement to the Complaint, the Response, the Policy, the Rules and the Supplemental Rules.

Factual background

4.1 The Complainant

The Complainant’s Activities

4.1.1 The Complainant is a German company, whose main business is to organise, licence and market the rights of a German hard rock music group known as THE SCORPIONS, SCORPIONS or, in the German language DIE SCORPIONS. The members of that Band are:

4.1.2 Rudolph SCHENKER founded the Band in 1965. The Complaint states that THE SCORPIONS are the most popular and successful rock music group ever established in Germany. They have sold some 30 million records and one particular number – WINDS OF CHANGE – which commemorates the fall of the Berlin Wall, has sold some 20 million copies. That number reached the Number One position in the popular music charts in several countries.

4.1.3 The Complaint exhibits details of 17 albums released by the Band and 11 videos. In addition, the Complaint gives particulars of 7 world tours spanning the years 1982 – 1999, including countries in Europe, Asia and North America. Six of those tours included Canada, the country where the Respondent is based.

The Complainant’s Trademarks

4.1.4 The Complaint schedules a number of registered trademarks both for the SCORPIONS wordmark and the wordmark with a Scorpion device in a number of countries, the earliest dating from 1980 in Germany. These include two International Registrations, IR491,667 filed in June 1974 predominantly in Classes 6, 9, 11, 16, 19, 25 and 41 and IR496,130 filed in November 1984 predominantly in Classes 9, 16, 25 and 41, both in 24 countries. The registered marks also include a number of South American countries [Argentina, Brazil and Venezuela], 5 other European countries not covered by the International Registrations, Japan, the United States and Canada.

4.1.5 The Canadian registrations are:

Registration No

Mark

Goods/Services

Filing/Registration Dates

671,647

SCORPIONS

9: 16: 25: and 41

Filed November 28, 1990

Registered May 24, 1996

671,649

SCORPIONS + device

9: 16: 25: and 41

Filed November 28, 1990

Registered March 22, 1996

The Complainant’s Domain Name

4.16 The Complainant registered the domain name <the-scorpions.com> on April 1, 2000, which resolves to the Band’s website, extracts from which are exhibited to the Complaint giving particulars of, inter alia, albums and videos released and a history of its overseas tours.

4.2 The Respondent

The Respondent’s Business

4.2.1 The Respondent, Alberta Hot Rods, is a publisher of websites from which it derives income principally in the form of advertising revenue and management fees. According to an affidavit from its President, Mary BURGAR, the Respondent publishes some 100 websites, including <highprairie.com>, <dreammachines.com>, <williamshakespeare.com>, <askangel.com> and <superscopes.com>. In addition, the Respondent operates and manages websites for over 50 third parties.

4.2.2. The domain name in issue

This was registered by the Respondent on November 26, 1996. Ms BURGAR states that ever since that date that domain name has redirected to a third party adult entertainment website, which generates advertising revenue. A print out from that website, <Red1.com> is exhibited to the Complaint. It functions as a portal to other websites such as Kara’s Adult Playground: Sex Uncensord: Lesbian Pink: Fetish Hotel etc. advertised for adults only.

4.2.3. In addition, also since 1996 the email functionality of the domain name in issue has been leased by the Respondent to <flaremail.com>, which offers it to users as an email address in connection with its free web-based email service.

The Parties’ Contentions

5.1 The Complainant

5.1.1. The Complainant’s case is that the domain name in issue is identical to its SCORPIONS trademark and that the Respondent has no rights or legitimate interests in respect of that domain name, which has been registered and is being used in bad faith.

5.1.2 As to rights or legitimate interests, the Complainants state that they have not licensed or otherwise permitted the Respondent to use the SCORPIONS trademark or to apply for a domain name incorporating that mark.

5.1.3 The principle thrust of the Complaint is directed to the twin bad faith requirements of paragraph 4a(iii) of the Policy. It focuses on identifying circumstances identified in paragraph 4b of the Policy which, if found to be present, shall be evidence of registration and use of the domain name in issue in bad faith. Specifically, the Complainant asserts that it has been registered by the Respondent for the purposes of disrupting the Complainant’s business [paragraph 4b(iii) of the Policy].

5.1.4 The Complainant also asserts that the domain name in issue was registered by the Respondent primarily to prevent the Complainant from reflecting its SCORPIONS trademark in a corresponding domain name. [The Complaint does not, however, assert a pattern of such conduct by the Respondent as required under paragraph 4b(ii) of the Policy.]

5.1.5 The Complainant finally asserts that, by using the domain name in issue, the Respondent has intentionally attempted to attract for financial gain Internet users to the third party website by creating a likelihood of confusion with the Complainant’s SCORPIONS mark as to the source, sponsorship or affiliation of that website [paragraph 4b(iv) of the Policy].

5.1.6 The Complaint points to the following evidence:

The Respondent cannot claim that it is making bona fideuse of the mark SCORPIONS in relation to the species arachnidae, because it is used as a portal to a hardcore pornographic website.

The Complainant’s music and entertainment services are youth oriented and it is damaging to the image of the Complainant’s SCORPIONS trademark for users of the domain name in issue – which incorporates that trademark – to be directed to a hard core pornographic website.

Use of the Internet by young people has resulted in an increasing number of letters from parents received by Members of the Band complaining of misleading their children to a pornographic website when they are in fact searching for the website of their favourite rock group. [This assertion is made in the Complainant’s Reply and is not evidenced by examples of such mail. The Panel does not attach any material or weight to this assertion.]

The Complainant’s SCORPIONS trademark is very well known and the Respondent must have been aware of it when registering the domain name in issue in November 1996.

Further, had the Respondent made a free of charge online trademark search in its home country, Canada, before applying to register the domain name in issue, the Respondent would have seen the extent of the Complainant’s registered rights in the SCORPIONS mark for various entertainment services.

The Respondent is using the Complainant’s well known SCORPIONS trademark to free ride on the goodwill in that mark.

Using a well-known trademark for the purpose of directing Internet users to pornographic websites has been found in other cases under the Policy to constitute an aggravated element in the assessment of bad faith registration and use. The Complaint cites in that respect the MadonnaDecision [Case D2000-0847], the Jeanette Winterson Decision [Case D2000-0235], the Isabelle Adjani Decision [Case D2000-0867] and the Nokia Girls Decision [Case D2000-0102].

5.2 The Respondent

5.2.1 Trademark or Service Mark in which the Complainant has rights

SCORPIONS is a common word. It denotes both a species of arachnids and, figuratively, wicked persons. The latter definition is taken from Easton’s 1897 Bible Dictionary.

SCORPIONS appeared in 73,230 web pages when run on the AltaVista search engine.

SCORPION [singular] is incorporated in over 80 active US registered trademarks and trademark applications. [The Complainant’s Reply states that there are 4 US registered trademarks for SCORPIONS [plural] simpliciter, of which 3 belong to the Complainant and the fourth is just at the application stage].

SCORPION [singular] is, from the Internet yellow pages directory, <switchboard.com>, incorporated in over 100 business names in the United States alone.

It follows from the above that the Complainant does not have exclusive use of or rights to the word SCORPIONS

5.2.2 Identical or Confusingly Similar

Subject to the forging, the Response does not deny that the domain name is identical to the Complainant’s SCORPIONS registered trademark.

5.2.3 Laches

The domain name in issue was registered in November 1996. No notice of any dispute was raised until this Complaint was filed in June 2001, some 4½ years later. The Respondent cites a dissenting opinion in Bank United Corp .v. Build Pro Communications [FA95158] where a delay of just under 3½ years was said to constitute

… the equivalent of laches in the fast moving worlds of the Internet.

5.2.4. Rights or Legitimate Interests

The Respondent had never heard of the Complainant Band until receipt of this Complaint.

Because of the dictionary definition denoting wicked personswith connotations of the bawdy and risqué, the Respondent chose to use the domain name in issue for an adult entertainment website.

The Policy does not preclude a party from registering a common word domain name.

Prior to notice of this dispute, the Respondent was using the domain name in issue in connection with a bona fide offering of services, namely redirecting traffic to a third party adult entertainment website from which it derives revenue. The Respondent cites the following Decisions under the Policy.

Etam .v. Alberta Hot Rods [Case No. D2000-1654]. There the domain name was <tammy.com> which, as in this case, was used to redirect traffic to the <Red1.com> adult entertainment website. The Complainant had extensive registered trademark rights for TAMMY for clothing. The Complaint failed in relation to legitimate interest in the <tammy.com> domain name, the Decision stated:

Though many people may well find Respondent’s activities distasteful, there is no suggestion that they are illegal. Respondent’s redirection to a site logically related to the domain name at issue (here, related because of the rather crude but unfortunate common equation of people’s first name with adult content) constitutes a legitimate “use” under the Policy, just as redirection can constitute bad faith “use”.

There the domain name was <lipservice.com> registered in December 1995. The Complainant had used LIPSERVICE as a trademark for clothing since 1985 and a US registered trademark was obtained in 1990. The Respondent was in the business of purchasing domain names and deriving income from them through linking, inter alia, to adult entertainment websites. Here, the <lipservice.com> domain name had been linked to a third party adult entertainment website, <slut dot com>, since registration in 1995. In relation to rights and legitimate interest, the Decision stated:

… the Policy does not specify that a domain name must itself be displayed on the registrant’s website in order for there to be a legitimate interest in its use in connection with a bona fide offering of goods and services.

In view of the evidence showing that the Respondent has used the domain name for several years in connection with websites providing advertising links to adult entertainment websites and because the term “lip service” is susceptible of a meaning that is arguably, as Respondent has asserted, “apt” for the services offered, the Panel finds that the Complainants have failed to carry the burden of proof as to Respondent’s lack of “right or legitimate interest” in the domain name under paragraph 4a(ii) of the Policy.

There the domain name in issue was <lovelygirls.com>, used for the Respondent’s adult entertainment website, which bore the heading Lovelygirls Virtual Erotic Magazine. The Complainant had manufactured and sold, inter alia, women’s clothing under the LOVELY GIRLS mark since 1979. The Complainant also held a number of US registered trademarks for LOVELY GIRLS dating from 1982. In relation to rights and legitimate interests, the Panel stated:

Here the disputed domain name is being used in connection with a pornographic website. The words “lovely girls” are descriptive. The site contains pictures, some of which, no doubt, are of women to whom that description applies. There is no evidence that the Respondent knew of the Complainant’s trademark at the time of registration of the disputed domain name nor subsequently. There is nothing illegitimate about offering pornography on a website.

There the domain name in issue was <sweeps.com> used in relation to a website on which was located a directory page featuring links to various sites involving sweepstakes and related games. The Complainant had used the service mark SWEEPS in relation to retail store services featuring vacuum cleaners since 1990 and had obtained a US service mark registration for SWEEPS in 2000. The Decision states:

… Respondent was using the domain name not in the trademark sense, but in the descriptive sense describing the types of businesses (sweepstakes related) listed on the directory page. This Respondent is entitled to do.

Shirmax Retail .v. CES Marketing [Case No. AF-0104]

There the domain name in issue was <thyme.com>. The Respondent had registered other generic names, for example, <dill.com>. Two years before registration of the domain name in issue, the Complainant had obtained THYME as a trademark in Canada, which it used in relation to maternity clothing. For some time, the Respondent used the domain name in issue to redirect to a different site, at the domain name <cesmarketing.com>, the business of which was the development and marketing of valuable domain names. Finding that the Respondent had established rights and legitimate interests, the Panel stated:

Where the domain name and trademark in question are generic – and in particular where they comprise no more than a single, short, common word – the rights / interests inquiry is more likely to favour the domain name owner.

The Respondent also asserts a legitimate interest on the basis that the email functionality of the domain name in dispute is leased to a web-based email firm, <Flairmail.com>, which offers it as a vanity mail address. The Respondent cites in this respect:

There the domain name in issue was <bosco.com> registered in 1996, Bosco being a common surname, which the Respondent used in its vanity email business along with numerous other domain names containing common surnames. This business comprised a Mail Bank, which leased those domain names to individuals in a shared domain email service, so that its customers included, for example, <John@bosco.com> and <Marianne@bosco.com>. The Panel held that this established rights and legitimate interests in the domain name <bosco.com>, notwithstanding that the Complainant had used the mark BOSCO for, inter alia, chocolate syrups since 1928 and had held a US trademark for BOSCO since 1987.

The Respondent also asserts that the mere ownership of common word domain should, of itself, establish rights and legitimate interests. The Respondent cites numerous Decisions under the Policy in support of this proportion.

There the domain name was <yourenergysource.com>. The Complainant had since 1991 used the ENERGY SOURCE mark – a US registered trademark issued in 1993 but cancelled in 2000 – originally for the sale of video tapes featuring energy efficient information and instructions for building energy efficient structures and more recently for the buying and selling of goods and services in energy related markets over a global network. In relation to legitimate interests, the Respondent asserted that it was making fair use of generic terms. The Panel found:

Respondent has persuasively shown that the domain name is comprised of generic and/or descriptive terms and, in any event, is not exclusively associated with Complainant’s business.

Shirmax Retail, quoting the passage from the Decision extracted above,.

There the domain name in issue was <craftwork.com>. The Complainant had obtained US trademark registrations for CRAFTWORK for hand tools in 1990. The Panel held:

General Machines has not proven, however, that Prime Domains has no legitimate interests in respect of the domain name <craftwork.com>. General Machines’ trademark is not fanciful or arbitrary, and General Machines has submitted no evidence to establish either fame or strong secondary meaning in its mark such that consumers are likely to associate <craftwork.com> only with General Machines. As Prime Domains has demonstrated, the term “craftwork” is in widespread use in a descriptive sense. The Panel finds therefore that Prime Domains has rebutted General Machines’ arguments and has proven that it is in the business of selling generic and descriptive domain names such as <craftwork.com>. As a result, Prime Domains does have a legitimate interest in the domain name. That Prime Domains has offered to sell this descriptive, non-source identifying domain name does not make its interest illegitimate.

There the domain name in issue was <cartoys.net>. The Complainant had sold automobile accessory products and services since 1987 under the CAR TOYS trademark, which was a US registered trademark / service mark. The Complainant also owned the domain names <cartoys.com> and <cartoys.org>. The Respondent was in the business of acquiring domain names of common words for development and sale. The Panel held:

Car Toys Inc., has not proven that Informa has no legitimate interests in respect of the domain name <cartoys.net>. The CAR TOYS trademark is not fanciful or arbitrary, and Car Toys has submitted no evidence to establish either fame or secondary meaning in its mark such that customers are likely to associate <cartoys.net> with CAR TOYS. Informa has demonstrated that the name is in use elsewhere. The arbitrator finds, therefore, that Informa has rebutted Car Toys’ arguments and has shown that it is in the business of selling descriptive domain names such as <cartoys.net>. As a result, Informa does have a legitimate interest in the domain name. That Informa has offered to sell this domain name to Complainant after enquiry by Complainant does not make its interest illegitimate.

CRS Technology .v. Condenet Inc [NAF Case No. F9347] FA0002000093547

There the domain name was <concierge.com> used in relation to providing online travel services. The Complainant had a registered trademark for CONCIERGE for computer software application program interfaces using intelligent technologies which provide access to travel services. The Panel held that the Complaint failed under paragraph 4a(ii) of the Policy.

This is not a case in which CondeNet selected a domain name incorporating a famous or distinctive mark that, it should have known, it was not entitled to use. Rather, CondeNet selected as it domain name a mark that is somewhat descriptive and is meant to communicate some aspect of the services provided (i.e. the kind of assistance one could expect from a hotel concierge). The very reason it is attracted to this domain name is because of the positive image associated with the word, and not at all because of any desire to cause confusion with CRS’ trademark rights. In these circumstances, the first to register a domain name containing a generic or descriptive mark should prevail absent bad faith and lack of legitimate interest.

There the domain names were <wrinklecure.com> and <wrinklecure.com>. The Complainant was the author of a popular book entitled The Wrinkle Cure. The Respondent’s website indicated that beauty products and cosmetics would soon be available online. In a majority decision, the Respondent was found to have rights and a legitimate interest in the domain names.

This is not a case where Mr. Hirst selected domain names incorporating a famous or distinctive mark that he should have known he was entitled to use. Rather, he selected descriptive, if not generic, domain names that are descriptive of products or services that could be sold under the domain names. The first to register such domain names, even if done with intent to profit from the registration, should prevail absent bad faith in the registration.

There the domain name in issue was <zero.com>. The Respondent was a long time Internet enthusiast and professional network engineer, who for 7 years used the domain name for primarily email and file transfer functions associated with his profession as a computer network engineer. The Complainant had registrations for the ZERO trademark in Europe, where it operated a clothing company. The Panel found that the Respondent did have a legitimate interest in respect of the domain name and that his registration was not effected in bad faith.

The word zero is a common English words. Although any number of organisations (including the Complainant) may have trademark rights in such a word (and indeed the Respondent has produced evidence of numerous US trademarks which include or comprise the word zero) that does not preclude the Respondent effecting registration of a common word on the first come, first served basis which was available. The Respondent’s reasons for doing so, namely that it was short, simple and easy to remember provide an entirely reasonable and proper explanation of the Respondent’s choice of this word. The Panel further notes that the Respondent has not, on the evidence, registered any other domain names, and had never heard of the Complainant at the time he effected the registration.

There the domain name as <shutterbug.com>. The Respondent planned to set up a website focussing on the needs of hobbyists, amateur photographers and photography enthusiasts. The Complainant had published since 1972 a monthly SHUTTERBUG magazine for advanced amateur and professional photographers and since 1996 had hosted an Internet site, <shutterbug.net>. The Panel held:

The mark is a word, shutterbug, that is a common, generic term, descriptive of photographic enthusiasts. Complainant’s mark extends only to magazines related to photography; ownership of the mark does not ipso facto give Complainant the exclusive right to the word shutterbug in all contexts relating to photography. Third party use of shutterbug and variations is widespread among businesses related to photography, and there is no evidence of action by Complainant to enjoin their use. There is also no evidence of any special association of the word with Complainant’s magazine.

Either of Respondent’s anticipated uses of the domain name relates to photography, and neither appears to constitute a magazine. Respondent has established a legitimate right to the domain name.

There the domain name was <firstamerican.com>, which was used by the Respondent (a Hong Kong company) for a portal site linking to other websites. The Complainant had used FIRST AMERICAN since 1982 as a trademark for a mutual fund investment service and held registered US FIRST AMERICAN trademark registrations in respect of mutual fund investment services. The majority of the Panel found that the words First American are widely adopted and used by a variety of different businesses extending across a spectrum of business activities and geographical locations. The dissenting Panelist, Scott Donahey, stated:

If the Respondent’s citation to the number of registrants and users of the trademark FIRST AMERICAN is testimony to anything, it is testimony to the popularity and general knowledge of the use of the name in American commerce and of the need to trademark it. It defies credulity that Respondent was unaware of the mark’s use in commerce, even if Respondent may not have known of Complainant’s particular registration.

Finally, given that anyone has a right to register as a domain name common words in the language, the Respondent contends that legitimate interest is even established where a Respondent’s only purpose in registering a common word domain name is for resale. In this respect, the Respondent cites four decisions under the Policy.

There the domain name in issue was <kis.com> which served as a portal to a Korean information site. The Complainant had since 1983 used KIS in relation to its business of manufacturing mini labs for picture and photo processing and held numerous registrations for KIS in Europe and in the United States. Finding that the Respondent had a legitimate interest in the domain name, the Panel stated

Under appropriate circumstances the offering for sale of a domain name can itself constitute a bone fide offering of goods or services for the purposes of paragraph 4c(i) of the Policy.

There the domain name in issue was <allocation.com>. The Respondent operated a website under the domain name <rockbottomdomains.com> where he offered for sale around 400 different domain names including the domain name in issue. The Complainant owned a German registered trademark ALLOCATION in Classes 9, 35 and 42 for computers and computer related services. Because the Complainant failed to show that the Respondent had chosen the domain name with intent to profit from or otherwise abuse the Complainant’s trademark rights [i.e. there was no evidence of bad faith registration or use], the Panel held that registration of <allocation.com> for resale gave the Respondent a legitimate interest in the domain name.

The Respondent’s case is that there is absolutely no evidence that any of the circumstances set out in paragraphs 4(b)(i) – (iv) of the Policy apply.

First, the arguments made in relation to demonstrating rights or legitimate interests also serve to demonstrate good faith registration and use.

Second, the fact that the Complainant has prior registered trademark rights does not demonstrate that the Respondent’s later domain name registration was so registered to prevent the Complainant from reflecting its trademark in a corresponding domain name. The Respondent cites Steven Schimpff .v. Jerry Sumpton[NAF Case No. F94333]. There the domain name was <bassets.com>, which the Respondent used to provide vanity email services. The Respondent had registered some 12,000 domain names and had over 870,000 customers for whom it provided shared email services. The domains were surnames, breeds of dogs, flowers etc., for example providing <john@bassets.com> for a Basset Hound lover. The Complainant had used since 1995 the registered trademark BASSETS for computer software. The Panel stated:

The mere fact a generic term is also the subject of a trademark registration (or registrations) in one or more jurisdictions does not mean that a party like Respondent, which has registered numerous domain names using words which may or may not also be used as trademarks, is automatically guilty ofbad faith. Obviously, the use of such a word prevents the trademark owner from having a corresponding domain name, More, however, is required to establish the pattern referred to in paragraph 4b(ii) of the Policy.

The Respondent also cites Sudnif SA .v. Tulle [WIPO Case No. D2000-0807]. There the domain name in issue was <findus.com>, which the Respondent intended to use for a search engine. The Complainant had the FINDUS trademark widely registered for frozen foods. The Panel stated:

It is however, not in itself an act of bad faith to register and sell domain names. Bad faith only occurs if the domain name infringes rights belonging to someone else, and if the registration is made with the intent of somehow disrupting or damaging the business of the holder of the said right. If the Respondent has a legitimate interest in the domain name but nevertheless is willing to sell it to someone else who also has a legitimate interest in the domain name, this cannot be considered as an action performed in bad faith.

Third, the Respondent states that there is no shred of evidence that it registered the <scorpions.com>domain name to exploit the Band’s goodwill and has intentionally attempted to attract for financial gain Internet users to its site by creating a likelihood of confusion with the Band’s SCORPIONS mark as to source. The Panel (by majority), rejecting the Complaint in the First American Fund case (supra) for failure to satisfy paragraph 4a(iii) of the Policy, stated:

To construe 4b(iv) without a requirement of direct action by the Respondent against the Complainant would create a tremendous scope of protection around existing owners of marks of common words and mundane expressions, and prevent new entrants from using these words and terms – even in entirely different fields from existing uses. Such a result is inconsistent with existing trademark principles and with the limited language and scope of the Policy.

The Respondent also cites the Drew Bernstein case (Supra) where the Panel stated:

Certainly the Respondent had constructive knowledge of the Complainant’s federally registered trademark, whatever the state of its actual knowledge. However, the evidence also shows that the term lip service used in the Respondent’s domain name is not an arbitrary or coined term nor a distinctive trademark, but a common English phrase susceptible of more than one meaning or connotation, which can be and is used in many commercial contexts, and that one of those connotations is, as Respondent argues apt for the adult entertainment advertising engaged in by Respondent on the website accessed by the domain name. For this reason, the Panel finds that the evidence is insufficient to establish bad faith registration and use under paragraph 4b(iv) of the Policy.

Canned Foods Inc .v. Ult Search Inc [NAF Case No. F96320] FA0012000096320is another case relied upon by the Respondent. There, the domain name in issue was <groceryoutlet.com>. The Complainant had been offering services under the common law service mark GROCERY OUTLET since 1987. Owing to a procedural slip the Complainant lost the domain name which thereby became available to the public, whereupon the Respondent obtained it. The Respondent was in the business of developing themed search portals and derived revenue from directing web traffic from the portal site to other portal sites. The Panel rejected the Complaint by reason of the Complainant’s failure to show bad faith, stating:

Where the domain name is a generic term, it is difficult to conclude that there is a deliberate attempt to confuse. It is precisely because generic words are incapable of distinguishing one provider from another that trademark protection is denied them.

The mere fact that Respondent gains income from the domain name is not, in itself, bad faith no more than is the fact that not all of Respondent’s domain names resolve to useful or informative websites. It is not the ownership of multiple domains that constitutes bad faith, it is the intent to harm the mark owner that defines cybersquattering. Such intent was not established.

Finally, the Respondent cites Lumena S-Ka Z0-0 .v. Express Ventures [NAF Decision No. F94375]. FA0003000094375 There, the domain name in issue was <skarbiec.com>, which translates from Polish to treasure house. The Respondent managed over 1,000 domain names and the domain name in issue was intended for use by a Third Party for a website in Taiwan to promote lighting products and fixtures worldwide. The Complainant, owned the LUMENA trademark, registered in Poland and Russia, which it had used for 12 years in its business of information technology and electronic systems integration. The Panel found that the Respondent had shown sufficient evidence of intention to use the domain name in bona fide commerce to satisfy legitimate interest.

It did appear that Respondent was involved in the business of registering domain names with intent to resell them for a profit. If the domain name at issue were a common trademark such as IBM, evidence of this might well be sufficient to demonstrate a bad faith registration and use. <lumena.com>, however, involves a generic term, and there is no direct evidence that Respondent registered the domain name with the intent of capitalising on Complainant’s trademark interest.

… Complainant operates its ventures in the field of information technology and is not associated with lighting products. The Panel therefore found that Complainant has failed to sustain its burden of proving that Respondent registered the domain name in bad faith.

Fourth, that the cases relied upon by the Complainant to show bad faith registration and use should be distinguished on the facts of those cases [see paragraph 5.1.6 above]. There the disputed domain names, on their face, demonstrated the Respondent’s intent to capitalise on the fame of the Complainants, because they all incorporated unique marks. Whilst it is true that MADONNA is a word in the dictionary, the Respondent failed to provide a reasonable explanation for the selection of the domain name. By comparison, where the disputed domain name incorporates a common word, as it does here in the use of SCORPIONS, the burden is on the Complainant to provide adequate evidence of bad faith. In support of that proposition, the Respondent refers to Ultrafem Inc .v. Warren Royal[NAF Case No. F97682] FA0106000097682. There, the domain name in issue was <instead.com>, which the Respondent intended for use for an ecological friendly consumer products retail website and portal. The Complainant had a registered trademark for INSTEAD, which had been used since 1996 for feminine products. Rejecting the Complaint, the Panel stated:

A bad faith showing would require the Complainant to prove that the Respondent registered <instead.com> specifically to sell to the Complainant, or that the value of instead as a domain name derived exclusively from the fame of its trademark. Neither has been proven in this case. In the absence of an intent to capitalise on the Complainant’s trademark interest, the Complainant cannot assert an exclusive right over a domain name that is a common generic term. Therefore, it does not constitute bad faith for a company making a legitimate use of a domain name to attempt to sell the domain name.

The Respondent also relies upon the evidence that before this Complaint it had never heard of the Complainant Band, that there is no evidence of a pattern of registering unique trademarks as domain names, that there is no evidence that it registered the domain name to trade off the alleged popularity of the Band, and that there is a plausible explanation for using the word SCORPIONS [with its wicked person connotation] for an adult website.

Finally, there is no requirement that a common word domain can only be used in good faith in association with its common meaning: here, SCORPIONS for the scorpion arachnid species. It is common practice for businesses to use the names of animals, insets and other common words for all sorts of arbitrary purposes quite unconnected with their dictionary meanings.

Discussion and Findings

6.1 The Policy paragraph 4a provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding:

that the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

the Respondent has no rights or legitimate interest in respect of the domain name; and

the domain name has been registered and is being used in bad faith.

6.2 The Policy paragraph 4c sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent’s rights or legitimate interest in the domain name in issue.

6.3 The Policy paragraph 4b sets out circumstances which, again in particular but without limitation, if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.

6.4 As stated, the circumstances set out in paragraphs 4b and c of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognises that other circumstances can be evidence relevant to the requirements of paragraphs 4(a)(ii) and (iii) of the Policy.

Identical or Confusingly Similar

6.5 The Respondent does not dispute that the domain name and the SCORPION trademark are identical. The requirement of paragraph 4a(i) of the Policy is, therefore, met.

Laches

6.6 The Panel does not consider that a delay of 4½ years in bringing the Complaint disentitles the Complainant to a remedy under the Policy. The Rules provide that a Panel may apply any rules and principles of law that it deems applicable [Rule 15(a)]. The Complainant is a German company and the Respondent is a business located in Canada. No rule or principle of law [whether Canadian, German or other] is asserted by the Respondent in support of its contention that the Complainant’s case should be barred for delay. There is no evidence of acquiescence by the Complainant or of an estoppel where the Respondent has changed its position consequent upon some action by the Complainant. The Respondent had constructive notice of the Complainant’s Canadian trademarks which were registered in March and May 1996 at the time the Respondent registered the domain name in issue in November 1996. The Respondent’s case is that the Complainant’s SCORPIONS trademark is, in any event, irrelevant since no misuse of those trademark rights has been occasioned by registration of the domain name.

6.7 The relevance of the delay by the Complainant goes, in the Panel’s view, to the credibility of the Complainant’s assertion that increasing use of the Internet has resulted in parents of young children complaining that a search for their favourite rock bank leads to a pornographic website [see paragraph 5.1.7 above]. If this really was occurring it would seem likely that the Complaint would have been brought earlier, that this assertion would have been made in the Complaint – rather than in the Complainant’s Reply to the Response – and that (as stated above) examples of such mail would have been annexed to the Complaint.

Rights or Legitimate Interests

6.8 While the Panel is unanimous in finding that the Complaint should be denied for failure by the Complainant to meet the twin requirements of paragraph 4a(iii) of the Policy, they are not ad idem on the issue of rights or legitimate interests under paragraph 4a(ii) of the Policy. Specifically, Panelists, Mark Partridge and David Perkins take different views on this element of the case, which are set out in their separate Concurring Opinions (below). Panelist Dana Haviland is of the opinion that it is not necessary to decide this element in view of the Panel’s finding on the element of bad faith.

Registered and Used in Bad Faith

6.9 The Panel unanimously find that the Complaint fails to satisfy the requirements of paragraph 4a(iii) of the Policy.

6.10 No case under paragraph 4b(i) of the Policy is advanced by the Complainant.

6.11 The case under paragraph 4b(ii) fails, as the Complaint provides no evidence of a pattern of conduct by the Respondent of registering third party trademarks to prevent the trademark owners from reflecting those marks in corresponding domain names.

6.12 There is no evidence that the Respondent registered <scorpions.com> primarily for the purpose of disrupting the business of the Complainant Band.

6.13 Nor is there any evidence that the Respondent registered that domain name with intent to attract Internet users to the <red1.com> adult entertainment website by creating a likelihood of confusion with the Band’s SCORPION mark as to source. The cases cited by the Respondent support the proposition that where intent is not self-evident – as is the case on the facts of this dispute – the burden is on the Complainant. Where the Complainant’s trademark is not distinctive only of the Band and its products and is capable of other connotations, that can be a difficult burden for the Complainant to discharge. The Panel agrees with the Respondent that this case is far from being on all fours with the famous name cases involving Madonna: Jeanette Winterson: Isabelle Adjani; and NOKIA.

Decision

The Panel decides that although the Complainant has proved its case under paragraph 4a(i), it has failed to meet the requirements of paragraph 4a(iii) of the Policy. Accordingly, the Complaint is dismissed.

David Perkins Presiding Panelist

Dana Haviland Panelist

Mark van Buren Partridge Panelist

Dated: November 7, 2001

Concurring Opinion

Although I concur with the result stated in the principal decision, I do not agree with the Presiding Panelist that the Respondent has demonstrated rights or legitimate interests in the Domain Name.

I agree that Complainant has failed to establish bad faith registration and use of the Domain Name. Complainant has the burden of proof on all elements of its claim, including the issue of bad faith. Here, the only evidence in support of bad faith is the fact that the Domain Name is identical to Complainant’s name and mark. There are no other indications of bad faith. Weighing against a finding of bad faith is the fact that “Scorpions” is a common term in wide use. Complainant’s name is used for a German rock group that obtained some international renown over a decade ago. Respondent, located in Canada, has done nothing to suggest any connection with the German group or rock music, and there is no evidence to show that Respondent was aware of Complainant’s use of “Scorpions” when it selected the Domain Name. Although Respondent’s argument – that it selected the name because of its archaic definition as “wicked person” – seems contrived, I do find on the record that it is more likely than not that Respondent registered and used the Domain Name in the hope that it would direct traffic to a third party adult site because it is a common, ordinary term, and not because of any association or confusion with Complainant’s use of the term.

The Presiding Panelist takes the view that Respondent has a legitimate interest in the Domain Name. In his view, use of a domain name as a portal to redirect traffic to a third party’s website in return for revenue constitutes use in connection with a bona fide offering of services under Paragraph 4(c)(i) of the Policy. I think that statement goes too far. If it were correct, Paragraph 4(b)(iv) of the Policy would be meaningless, since any commercial use, good faith or bad, in connection with the offering of goods or services, would create a legitimate interest and prevent relief. To establish a legitimate interest, it should appear that the Domain Name is used in good faith and not for the purpose of misdirecting Internet users to a third party site. Otherwise, a deliberate cybersquatter could circumvent the Policy simply by linking to a third party site, a result that is obviously contrary to the intent of the policy. Put another way, if the respondent’s use is a deliberate infringement, the use is not bona fide and therefore fails to create any right or legitimate interest in the domain name under the Policy.

The Presiding Panelist also takes the view that Respondent has made fair use of the term “Scorpions” under Paragraph 4(c)(iii) of the Policy. I disagree with that finding. The fair use doctrine permits descriptive use of another’s mark merely to describe the nature or quality of the user’s goods or services. Here, Respondent’s does not use “Scorpions” in its common descriptive sense. Rather, Respondent uses “Scorpions” as an arbitrary term or perhaps as a term to suggest some wicked or evil quality. Further, Respondent uses the term to attract attention for commercial gain. Thus, I would not find the Respondent is making a “legitimate non-commercial or fair use” of term within the meaning of Paragraph 4(c)(iii) of the Policy.

For these reasons, I would base the decision in Respondent’s favor solely on the fact that Complainant has failed to show bad faith registration and use.

Mark V.B. Partridge Panelist

Dated: November 7, 2001

Concurring Opinion

Although I concur with the result stated in the principal decision, for the following reasons I would also deny the Complaint for failure to show that the Respondent lacks rights or legitimate interests in the domain name in issue.

Use of the scorpions.com domain name before notice of this dispute in connection with a bona fide offering of services

1.1 As to the bona fide of the Respondent, according to the affidavit of its President, when she registered <scorpions.com> she had never heard of the Respondent’s Band.

1.2 As to the rationale for choosing the word scorpions, the Presiding Panelist tends to doubt that it was really seen as particularly appropriate for an adult entertainment website by reason of a Bible dictionary definition a century old.

1.3 The Respondent states that there is nothing in the Policy to preclude a party from registering a common word as a domain name. This, of course, is correct but always subject to the proviso that where that word happens to be identical or confusingly similar to a third party’s trademark, the registrant of the domain name does not fall foul of paragraphs 4a(ii) and (iii) of the Policy.

1.4 Is using a domain name as a portal to redirect traffic to a third party’s website from which the domain name registrant derives revenue use in connection with a bona fide offering of services? The Presiding Panelist is satisfied that it does. What is mala fide about the Respondent’s actual use in this case? There is no evidence of the Respondent committing a deliberate infringement of the Complainant’s trademark rights. The cases cited by the Respondent are in point.

Trademark

Goods / Services

Domain Name

Website

TAMMY

Clothing

tammy.com

Third party adult entertainment

LIP SERVICE

clothing

lipservice.com

Third party adult entertainment

LOVELY GIRLS

clothing

lovelygirls.com

Respondent’s adult entertainment website

SWEEPS

Vacuum Cleaner Services

sweeps.com

Directory page of a website featuring sweepstakes and related games

THYME

Maternity Clothing

thyme.com

Redirecting to a site selling domain names

1.5 Is leasing a domain name to a third party for use as a vanity email address use in connection with a bona fide offering of services? The Bosco case cited by the Respondent is, in the Presiding Panelist’s view, persuasive.

Fair use without intent for commercial gain to misleadingly divert consumers or tarnish the Complainant’s trademark

2.1 The Respondent asserts that mere ownership of a common word domain should, of itself, establish rights and legitimate interests. The Presiding Panelist does not agree with this as a generally applicable proposition. Each case must depend upon the particular facts involved. If, however, the word used as a domain name is generic or descriptive of the use to which it is put, then it will tend to indicate a fair use of the domain name without intent to divert consumers or to tarnish the trademark in issue [under paragraph 4c(iii) of the Policy].

A Complainant must then show intent by the domain name registrant to divert its consumers or tarnish its trademark. Where the common word domain name and the trademark are the same, it may well be impossible for the Complainant to demonstrate that the trademark is, nevertheless, associated exclusively with his business so that diversion of consumers or tarnishment are intended by the domain name registrant. On the facts of the cases cited by the Respondent, the Complainants all failed to establish intent:

2.2 The Respondent may still have rights to or legitimate interests in a domain name if the only purpose in registering the common word domain name is for resale. Again, this is not a generally applicable principle. It may apply if that offering is bona fide [paragraph 4c(i)] and if the use is fair without intent for commercial gain to misleadingly divert consumers or tarnish the Complainant’s trademark [paragraph 4c(iii)]. Put another way, the fact that a domain name is registered for resale does not, of itself, deprive the registrant of rights or legitimate interests. On the facts of the cases cited by the Respondent, the domain name registrants were all found to have rights or legitimate interests.

Trademark

Goods / Services

Domain Name

Respondent’s Business

KIS

Mini labs for photo processing

kis.com

A portal to a Korean Information Site

ALLOCATION

Computers and computer related services

Allocation.com

Operated a website selling domain names

AUDIO POINT

Voice portal services

Audiopoint.com

For use in its Point Network, comprising 60 domain names with the suffix point.com

NEWS TODAY

English Language Newspaper in India

Newstoday.com

To deliver daily news information to its 1000 clients to whom it provided e-Business solutions, web development etc

The Policy does not, in the Presiding Panelist’s view, say that fair use must be restricted to descriptive use of the Complainant’s trademark merely to describe the nature and quality of the Respondent’s goods or services. Fair, in the view of the Presiding Panelist, translates to bona fide, the proviso to paragraph 4c(iii) of the Policy being directed to prevent a Respondent from relying upon a use intended to misleadingly divert etc. Here, on the evidence there is no apparent intention by Alberta Hot Rods either to divert the Pop Group’s fans or tarnish their SCORPIONS trademark.

Conclusion under paragraph 4a(ii) of the Policy

Although, as indicated above, the Presiding Panelist does not accept as generally applicable principles certain of the Respondent’s assertions, on the facts the Presiding Panelist is satisfied that the Respondent has demonstrated rights to and legitimate interest in the <scorpions.com> domain name under paragraphs 4c(i) and (iii) of the Policy. The Complainant has not produced evidence to show that the SCORPIONS mark is so well known that it is associated exclusively with their Band, thus pointing to intent by the Respondent to misleadingly divert its customers or tarnish its trademark. Further, this case is not on all fours with the Marriott International Inc .v. John Marriotcase [NAF Case No. F94737], where the Respondent was held to have known that MARRIOTT – which differed only by a single letter “t” from the <marriot.com> domain name in issue – was the Complainant’s mark under which it does worldwide business. Nor is it comparable to another case cited by the Complainant in the Reply to Response, SportSoft GmbH .v. Hale Irwin’sGolfers’ Passport [NAF Case No. F94956], where the Respondent’s use of the <golferspassport.com> domain name involved selling identical products and golf course listing information to that which the Complainant sold under its registered GOLFERS’ PASSPORT trademark.

Further, the Respondent’s uses before notice of this dispute of the domain name both as a portal to a third party adult entertainment website and leased to another third party for use as a vanity email address satisfy paragraph 4c(i) of the Policy.

The above finding that the Respondent has demonstrated legitimate interests and rights in the domain name also serves to demonstrate good faith registration and use.